Shutterstock v. et al.
Claim Number: FA1907001854062




   Complainant: Shutterstock Heidi Garfield of New York, NY, United States of America

   Respondent: WhoisGuard Protected / WhoisGuard, Inc. of Panama Panama, PA


   Registries: .PW Registry
   Registrars: Namecheap


   The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Examiner in this proceeding.
   Anne M. Wallace, as Examiner


   Complainant Submitted: July 26, 2019
   Commencement: July 29, 2019
   Default Date: August 13, 2019
   Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules").


   Complainant requests that the domain name be suspended for the life of the registration.


   Clear and convincing evidence.


   Findings of Fact: Registrant has registered and is using the disputed domain name which incorporates Complainant's SHUTTERSTOCK mark.


Even though the Respondent has defaulted, URS Procedure 1.2.6, requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended.

[URS] The registered domain name(s) is/are identical or confusingly similar to a word mark:
  (i) for which the Complainant holds a valid national or regional registration and that is in current use; or
  (ii) that has been validated through court proceedings; or
  (iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.

Determined: Finding for Complainant 

Complainant owns trade mark registrations for its SHUTTERSTOCK trade mark and uses the mark extensively in its business. The domain name merely incorporates Complainant's mark and adds the .pw extension.

[URS] Registrant has no legitimate right or interest to the domain name.

Determined: Finding for Complainant 

Complainant has established prima facie that Registrant has no right or legitimate interest in the domain name .

[URS] The domain name(s) was/were registered and is being used in bad faith.
  a. Registrant has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of pocket costs directly related to the domain name; or
  b. Registrant has registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that Registrant has engaged in a pattern of such conduct; or
  c. Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
  d. By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant's web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of Registrant's web site or location or of a product or service on that web site or location.

Determined: Finding for Complainant 

The shutterstock.pw, website contains pornographic images and videos. The content is offensive and inappropriate and tarnishes the goodwill associated with Complainant's SHUTTERSTOCK mark. This establishes prima facie that Registrant registered the domain name primarily for the purpose of disrupting Complainant's business by tarnishing the brand. This is bad faith. recognition associated with the Shutterstock Marks. In doing so, the respondent causes reputational harm to Shutterstock by damaging Shutterstock�s relationships with potential customers and suppliers who mistakenly access Respondent�s s


The Examiner may find that the Complaint was brought in an abuse of this proceeding or that it contained material falsehoods.

The Examiner finds as follows:

  1. The Complaint was neither abusive nor contained material falsehoods. 


After reviewing the parties submissions, the Examiner determines that the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain name(s) be SUSPENDED for the duration of the registration:

  1. shutterstock.pw


Anne M. Wallace
Dated: August 13, 2019



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